Did I Infringe a Trademark? 我侵权商标了吗？

If you receive notice that a lawsuit has been filed against you in the U.S. for trademark infringement, it will likely be unclear to you whether you actually infringed. Below, I answer common questions relating to U.S. trademark infringement. First, it is important to understand the specific U.S. laws that define trademark infringement. The U.S. trademark statute is commonly referred to as the “Lanham Act.” 15 USC § 1114 defines what constitutes trademark infringement under U.S. law. 15 USC § 1125 defines a similar type of infringement, false designation of origin, that is almost always sued upon in the same lawsuit. Suits filed in Chicago, a common venue for U.S. trademark violation suits, typically also allege violation of the Anticybersquatting Consumer Protection Act (15 U.S.C. § 1125(d)) and the Illinois Uniform Deceptive Trade Practices Act (815 ILCS § 510, et seq.) The latter two statutes will be discussed in detail in separate articles.

The information below is responsive to common questions posed by defendants in U.S. trademark violation cases. The list will be updated as new and novel questions are presented. Please also see other articles on our blog or contact us for additional information, a thorough case review and representation.

Question One: The photo and caption do not contain a word mark. For example, I am accused of selling counterfeit Levi’s jeans but the word Levi’s is not on my online stores. Did I Infringe a trademark?

问题一：照片和标题不包含单词商标。例如，我被指控销售假冒李维斯牛仔裤，但李维斯这个词不在我的网店上。我侵犯了商标吗？

Answer One: Trademark protection extends beyond trade names to symbols. For example, the distinctive “arcuate” stitching on the back of a pair of Levi’s jeans is protected by a trademark. A red tab affixed to the back right pocket of a pair of jeans is also protected by a Levi’s trademark. Word marks and marks that consist only of symbols do not have to be displayed together in order to qualify for trademark protection. In this example, if a protected trademark is displayed in a photo online, a trademark has been violated.

Question Two: The trademark I am accused of violating is not exactly displayed on my website. For example, a T-shirt posted on my online store shows one of the Angry Birds figures. However, there are differences between the figure on the T-shirt and Angry Birds figures. The Angry Birds figure on the T-shirt has no tail, the eyes are smaller and the eyebrows point in the opposite direction. Did I infringe a trademark?

use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.

(Unquote)

Actual sale of infringing items is not necessary. “Offering for sale” or “advertising” a registered mark without license is a violation of U.S. trademark law.

Question Four: A protected trademark or trade name was displayed on my website. However, I did not buy or take possession of the infringing items. I got the photo from another online retailer. I was planning to drop ship any orders from the supplier. Did I infringe a trademark?

Answer Four: This question is similar to Question Three above. Actual sale or the taking possession of the infringing items is not necessary. “Offering for sale” or “advertising” a registered mark without license is a violation of U.S. trademark law.

回答四：这个问题类似于上面的问题三。实际出售或持有侵权物品是没有必要的。“提供销售”或“广告”未经授权许可的注册商标就违反了美国商标法。

Question Five: I did not mean to! I have never heard of the brand before and/or did not know their mark or trade name. Did I infringe a trademark?

问题五：我不是故意的！我以前从来没有听说过这个品牌和/或不知道他们的商标或品牌名。我侵犯了商标吗？

Answer Five: The unfortunate answer is that in these circumstances, yes. The Lanham Act does not force trademark owners to prove that a trademark violation was intentional. If a trademark is violated, the infringer is liable to the trademark owner. However, damages may be less where the the infringement is not willful.

Question Six: The trademark they say I violated is not registered in China! Did I infringe a trademark?

问题六：他们说我侵权的商标在中国根本没有注册！我侵犯了商标吗？

Answer Six: Please see our article Jurisdiction for U.S. Trademark Violations 美国商标侵权的司法管辖权. The lawsuit you face is in the U.S. because you have entered the U.S. market by either selling or offering to sell items into the U.S. It makes no difference that the trademark is not registered in your home country.

Question Seven: The trademark they say I infringed looks nothing like what appeared on my online store. Did I infringe a trademark?

问题七：他们说我侵犯的商标和我网站上的看起来根本不像。我侵犯了商标吗？

Answer Seven: Here, the answer is maybe. Remember, the trademark does not have to be exact but only substantially similar. Whether two marks are substantially similar is a question for the judge or jury.

回答七：在这里，答案是“可能”。请记住，商标不一定是精确的，只要实质上相似就可能侵权。两个标记是否大致相似，是法官或陪审团的问题。

These are a few of the common questions that clients regularly present to us. If your question is not answered here, Contact Us to submit additional questions for review on our blog and for a thorough case review and legal representation.